CYBERSQUATTING: PREVENTION AND REMEDIATION STRATEGIES

1. CYBERSQUATTING: PREVENTION AND REMEDIATION STRATEGIES NET2002 – Washington, DC April 18, 2002 Scott Bearby NCAA Associate General Counsel Copyright Scott Bearby 2002. This work is the intellectual property of the author. Permission is granted for this material to be shared for non-commercial, educational purposes, provided that this copyright statement appears on the reproduced materials and notice is given that the copying is by permission of the author. To disseminate otherwise or to republish requires written permission from the author.

2. Cybersquatting defined • Uniform Domain Name Dispute Resolution Policy - UDRP • Rules governing arbitration of disputes about top-level domain names and some country codes • Anti-Cybersquatting Consumer Protection Act - ACPA • Statute relevant for infringement actions brought in United States courts

3. UDRP Standard (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith.

4. ACPA - Standard • Use or variation of trademark or misleading representation that is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association or otherwise mislead

5. Cybersquatting: Strategy • Establish a budget • Domain names can be registered for as little as $20/year • Consider registration of business critical domain names • Those domain names that match a trademark and those that are most important to keep out of the hands of others

6. Cybersquatting: Strategy • Which domain name suffixes to choose? • .com, .net., .org • .info, .biz, and the other new “top levels” • “Sunrise” periods • Country codes • Commercially interesting letters • .tv., .ws, .us • Where you do business

7. UDRP • Binding arbitration agreed to by registrant at time of registration. • Average arbitration fee is between $1,000 and $2,000, depending on number of domain names at issue. • Process is streamlined with only electronic/paper submissions. • Results can be obtained within several weeks from submission. • Complainant receives transfer in over 60 percent of cases completed.

8. When UDRP doesn’t work • Case studies • NCAABASKETBALLODDS.COM v. NCAAMENSBASKETBALL.COM • FINALFOURMERCHANDISE.COM V. FINALFOURSEATS.COM

9. Settlement • Consider a written agreement. • Need to include all offending domain names. • Hold any compensation to transfer and registration fees; hold payment until all domains are transferred. • Obtain agreement not to register other related domain names in the future. • Obtain jurisdiction clause if further misconduct. • Be vigilant to make sure registrar completes transfer.

10. Taking It To Court • ACPA added to Lanham Act to assist courts with application of traditional trademark law to the Internet. • Effective November 29, 1999. • Retroactive characteristics. • Prospective remedies. • “Bad faith,” the critical element.

11. Litigation • Positives • Injunctive relief • Monetary damages • Negatives • Expensive • Experts • Attorney fees • Intrusive • Discovery • Part of the federal case backlog

12. Jurisdiction • Personal • “Doing business” on the web • Passive sites • Interactive sites • In Rem

13. Other causes of action Trademark infringement Statutory and Common Law

14. 1) the strength or distinctiveness of the mark; 2) the similarity of the two marks; 3) the similarity of the goods or services that the marks identify; 4) the similarity of the facilities employed by the parties to transact their business; 5) the similarity of the advertising used by the parties; 6) the defendant’s intent in adopting the same or similar mark; and 7) actual confusion. Trademark infringement – proving likelihood of confusion

15. Trademark dilution • Eight nonexclusive factors, including • the degree of inherent or acquired distinctiveness, • the duration and extent of the mark’s use, • the duration and extent of advertising and publicity, • the geographic scope, the nature and use by third parties, • and the registration on the United States Patent and Trademark Office (USPTO) register

16. Unfair competition • unfair competition with respect to a trademark is that 1) the name must have acquired a secondary meaning or significance and 2), defendant must have unfairly used the name or a simulation of it to the prejudice of plaintiff’s interest

17. Questions